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designs

December 31, 2016

On December 29,the ILPTO launched its electronic filing system for design applications. We haven't yet tested it ourselves...and based on the EFS for patents, we don't know if anyone practicing in the field actually tested it before launch. As with the electronic filing system for patents launched last year, use of this system will become obligatory for patent practitioners representing others, as well as for non-natural persons applying for design protection; the six-month trial period is not meant for beta-testing but rather to allow practitioners to get used to the system (because, you know, the system was designed to make the ILPTO's job easier, and it no doubt does that, so as long as it achieves that goal, the question of how well it serves the public is moot). Presumbably, even with the expected design flaws and bugs that may or may not be fixed, it will on the whole represent an improvement over the current system. We'll post updates once we've checked it out.

June 10, 2015

Yesterday the ILPTO announced, via its email distribution list and on its web site (the link to the actual announcement is this one), that a new database of registered designs had been put online at http://designsearch.justice.gov.il/. The database is bilingual, being searchable and providing results in both English and Hebrew. There's even an instructional video here (in Hebrew only). As shown in the screenshot below, several different criteria may be used as search parameters.

The launch of this database is a welcome development, and the database itself seems to be more user-friendly than the existing online patents database: in addition to the various search criteria, there are a number of options for sorting and displaying the results.

One caveat: unlike patents and patent applications, which are published 18 months after the earliest priority date or shortly thereafter, designs in Israel are only supposed to be opened to the public after the registration is complete, and not less than two years after the effective filing date. (The rationale behind that rule, to the extent it applies to designs that have been registered in under two years, is unclear, as it defeats the notice function of registering designs. The relevant ordinance is British and dates to the 1920's, and it's likely that if new design legislation is enacted, that particular provision will be sent packing.)

This means that for now at least, (a) this database won't enable people to find out if a particular design application has been submitted in Israel; and (b) the database won't show any registered designs having an effective filing date less than two years ago. And indeed, a query for designs filed between June 10, 2013 and June 10, 2015 (today) yields five hits, all of which were filed on June 10, 2013 (see screenshot below). The query yielded no hits for designs filed after June 10, 2013.

If the earlier date in the range is changed to June 11, 2013 (i.e. less than two years before today), the query yields no hits at all.

So apparently the database is showing what it's supposed to show and not showing what it's not supposed to show.

November 09, 2014

Upon firing up my computer this morning, I found an email warning me that some changes had been made to PAIR; this was confirmed upon logging into PAIR. The changes effected are listed in the screenshot below (or here, if you need larger type): the ability to search Hague Agreement design applications (once the USA officially joins the Hague Agreement); indications regarding whether public or private PAIR is being used; name of the pki certificate holder’s name (for private sessions); indication of the address for correspondence in both public and private PAIR; and the addition of some collapsible menus in private PAIR to display the search options.

I have no beef with the first four changes - in fact, it's great to see the PTO anticipating a change that will only take effect in few months' time, and I look forward to the day when Israel facilitates electronic searching and viewing of its registered designs - but the last change is kind of annoying, since it imposes a few extra clicks before getting to the search screen, as opposed to the previous version of private PAIR, which showed all the search options on a single screen. See the screen shots below.

versus

versus

If the people at the PTO’s Electronic Business Center polled users before making these changes, they aren’t saying so.

Around 2007, apparently out of fear that its servers couldn’t handle heavy traffic from automated search-and-download programs, the PTO got rid of the ability to toggle back-and-forth between screens in PAIR. That feature was quite useful when comparing, for example, parent and divisional applications to one another. Apparently no one was consulted then, either.

And the documents downloaded from PAIR remain unsearchable, even if the original pdf files that were uploaded by the user were searchable. If you want a searchable file history, you’ll have to pay a pretty penny to a third party vendor, or make a searchable version yourself.

I think PAIR is a great tool, but please guys, next time you’re going to tinker with it, please ask us users first. Many parts of it don’t need fixing, and other parts that have long needed improvement remain in need.

September 10, 2013

When I was growing up, a Mercedes was considered to be a
well-made status symbol. When I was in college,
my experience at a summer job stocking spare parts at an auto dealer who sold
Mercedes and another make of German car seemed to bear this out. Other than hood ornaments, for which we
placed several orders a week (no doubt due to the predilection of
12-year-old-boys to help themselves to those items), there wasn’t much call for
new Mercedes parts, presumably attesting to the quality of the vehicles. The same was not true of the other make of
car.

So I was somewhat surprised when I saw one of those annoying
internet advertisements that run on our screens when we’re trying to watch something
else. This one is for Mercedes, and pitches its products from the angle that
since the company has a lot of patents – eighty thousand, according to the
advertisement – the company must be a true innovator.

First, I’m surprised that Mercedes feels it needs to
advertise at all, but far be it for me to second-guess the company’s market
research.

Second, I’m surprised about the number mentioned. The bland statement that the company has
80,000 patents, without more clarification, is apparently meant to imply that
the company has devised 80,000 separate, patentable inventions. But the advertisement, which is in English
and presumably ran in the USA, doesn’t explain if 80K represents only US
patents or all patents worldwide, nor does it explain if the reference is to
all patents granted over the years or only the company’s currently active
portofolio. It doesn’t mention if that
number includes industrial designs, which in the USA are called “design patents”
and which outside the USA merely need to be novel (no inventive step
requirement); or if the figure includes utility models, which are granted in
Germany but not the USA. And it doesn’t
mention if those “patents” are all assigned to Mercedes-Benz or also to
Daimler-Benz or Daimler-Chyrsler.

As of this morning, a quick check of the USPTO database for patents assigned to “Mercedes” or “Daimler”
lists 4,238 patents, including design patents, issued since 1976; if one looks
only for patents assigned to Mercedes that number drops to 969. Presumably there aren’t another 75,000+
pre-1976 US patents lurking about, so the eighty-thousand number mentioned in
the commercial apparently refers to all patents issued everywhere since the
company’s inception, to all predecessors and successors interest of the Mercedes
name.

This makes the “we have 80K patents” pitch sound lame: why should the company try imply that has developed 80,000 patentable inventions, when in fact it’s really talking about a far smaller number of
different inventions, plus merely novel designs, registered in a number of
different countries over the past 100+ years? And why imply that all those patents are current, when many of those inventions are now passe? Even if it only has a few hundred patentable inventions to its credit over the years,
that’s still a considerable number and shows a commitment to improving its products. In this case the puffery merely detracts
from the company’s name.

Finally, in this day and age, I’m surprised that anyone
would launch a commercial that implies that lots of patents necessarily means lots
of innovation, and I’m particularly surprised that Mercedes of all companies
would do so, given the demographic sector to which it’s marketing itself. If you can afford a Mercedes, there’s a good
chance you work in high-tech; and if you work in high-tech, you know that at
least since the State Street Bank decision in 1997 and up until recently, in
certain technology sectors it was easy to obtain US patents on obvious or even
known inventions. I suspect that’s not
the case with most of the work that automobile companies do, and that most of
their patents are granted for real, patentable inventions. But there are a lot of crappy patents out
there, and they (or more properly, the enforcement of them) has given the whole patent system a bad name. I'm amazed that Mercedes has chosen to associate itself with that.

For what it’s worth, the running of the ad has neither
increased nor decreased the likelihood of my buying a Mercedes the next time I
buy a car.

June 29, 2012

Last September, Israel went online as part of the Madrid system for trademark registration. This followed the necessary legislative and regulatory amendments to facilitate Israel’s participation in this system.

The Hague Agreement is to designs what the Madrid system is to trademarks: and international filing system that enables an applicant to obtain design protection in several countries at once. As explained on WIPO’s web site,

“This System gives the owner of an industrial design the possibility to have his design protected in several countries by simply filing one application with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). An international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.”

Israel is not a party to the Hague Agreement. Notwithstanding this fact, earlier this month, the head of the ILPTO, Asa Kling, posted a draft circular, in which he proposed to have the ILPTO recognize claims for priority to Hague system applications made in Israel design applications. His reasoning was that many of the Hague system countries are also signatories to the Paris Convention (as is Israel), and since for those countries filing via Hague is equivalent to filing in those countries themselves, he should accord Hague system applicants priority as if he they had filed in their own countries and claimed priority via the Paris Convention.

On its face, there is a certain logic to the Commissioner’s proposal: why should Hague system applicants have to file twice, once in Paris Convention country and once via the Hague system, in order to be able to claim priority in Israel?

But legally the proposal is hard to justify. Treaties only become enforceable in Israel once local legislation has been amended to implement them, so even if Israel had signed the Hague Agreement, it would still need to enact appropriate enabling legislation. Needless to say, in the absence of such accession to the agreement, the legal machinery to recognize Hague Agreement priority claims is not in place. The Commissioner cannot do by internal PTO regulation that which requires action by the Knesset to do. Indeed, he might be doing applicants a disservice by recognizing such priority claims, because an Israel court might later say he acted ultra vires, disallow the priority claim and, if there was internet publication of the design in the interim, void the design registration.

Given that problem, the Commissioner’s proposal is inscrutable from the political perspective: his predecessor was run out of town on a rail for ceasing paper publication of the Patents Journal without getting the Knesset to first enact the necessary legislative changes. Mr. Kling’s proposal is in effect an announcement that he wishes to repeat his predecessor’s folly and usurp the Knesset’s powers.

I don’t know why Mr. Kling seems set on repeating the past, rather than learning from others’ mistakes. I suspect that part of the problem is that he is receiving advice from some of the same people who unwisely counseled his predecessor.

In any event, there is no way to tell from the ILTPO’s web site if Mr. Kling received any comments on his proposal, as to date he has never published any such comments (a lack of transparency that will be the subject of a future post), but the guess here is that this particular proposal will not be implemented.